Section 8: Foreign Filing Requirements Under the Patents Act, 1970

16th September, 2024 - 7:03 am Categories: Foreign Foreign filing license Patent Filing 0 Comments

Introduction

Patents are territorial rights and if a patent application is filed in more than one country, there are certain steps that need to be taken, to attain protection for such a patent in India. Section 8 and Rule 12 of the Patents Act, 1970 provide pertinent provisions that need to be kept in mind in this regard. An applicant is required to prosecute his patent application at each national patent office where he seeks to protect his invention.

Section 8(1)(a) and Rule 12(1) and Rule 12(1A):

If the applicant has filed one or more applications at the Indian Patent Office and has already filed one or more applications for the same, or substantially the same invention in other countries, then he must submit, to the Indian Patent Office, a statement that includes detailed particulars, such as date of filing, publication number, status of an application, country name etc., at the time of filing or within 6 months from the filing of the application via Form 3.

Section 8(1)(b) and Rule 12(2) and Rule 12(3):

An undertaking has to be signed by the applicant, in the same Form 3, which states that the applicant shall keep the Controller informed about the foreign applications related to same, or substantially same invention from time to time. As per Rule 12(2), this period of providing information to the Controller is three months from the date of the first statement of objections. Post presenting the information about foreign filing, as per Rule 12(3), the Controller shall make use of accessible and available databases to check similar filed applications in a foreign country.

Section 8(2) and Rule 12(4):

The Controller may require the applicant to furnish new details related to the processing of the application, at any time after an application for patent is filed in India till grant or refusal of that patent. This information should be provided, within two months from date of communication by the Controller.

Case Studies:

1. Chemtura Corporation vs. The Union of India

 The Chemtura case dealt with the importance of adhering to the administrative requirements under Section 8. The issue of the case was that plaintiff (Chemtura) had omitted to comply with the requirements of Section 8(2). The plaintiff suppressed vital information from the patent office, regarding the prosecution of its patent applications filed with the USPTO and EPO. The Delhi High Court in this case held that the status of prosecution of a patent application in jurisdictions abroad must be provided in detail, including any information regarding searches conducted and objections raised. The case established the fact that while Section 8 titled may appear to be a simple procedural formality, it could easily serve to be a ground for revocation under Section 64(1)(m) of the Patents Act, if not taken up seriously.

2. Nokia Corporation vs. The Assistant Controller of Patents, Designs, Government of India

The dispute arose because Nokia submitted the date of filing of the national phase application in India based on international Patent Cooperation Treaty application. Assistant Controller of patent objected to this on the ground that the international filing date shall not be considered as the filing date of national phase. Even though Nokia provided full details regarding the actual date of filing of national phase the Assistant controller refused to grant patent on the ground that applicant had given false information and failed to disclose the necessary information to the Assistant Controller as per Section 8 of Patents Rules 2003. Nokia filed an appeal against the order of the Controller at Appellate Board. It was found that Nokia did not err in complying with Form 8 and the date as the international filing date mentioned was correct.

3. (Retd.) Sukeshbehl and Anr. Vs. Koninklijke Philips

The case involves a patent infringement suit filed by the respondent against the appellant, who sought to revoke the patent on the grounds that the respondent had failed to comply with Section 8 of the Patents Act, 1970. The appellant argued that the failure to disclose this information automatically renders the patent liable for revocation under Section 64(1)(m) of the Patents Act. However, the respondent contended that the omission was inadvertent and did not materially affect the patent grant. The court dismissed the appeal, holding that while Section 8 is mandatory, the power to revoke a patent under Section 64(1) is optional. The court concluded that revocation should only follow if the omission was deliberate and material to the patent’s grant, making the issue of intent a matter for trial.

Conclusion:

The details about the status of the applications filed in other countries aid the patent office in conforming that they are not overlooking any information which might declare the invention as non-patentable. The applicant is required to provide a statement and undertaking at the Indian Patent Office as per Section 8, specifying details of status of applications in other countries within six months from date of filing an application in India.

Author: Neha Vivek A, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

References:

1. The Patents Act, 1970, Section 8, https://ipindia.gov.in/writereaddata/Portal/ev/sections/ps8.html
2. The Patent Rules, 2003, (As amended 2024), Rule 12, https://ipindia.gov.in/writereaddata/Portal/ev/rules/pr12.html
3. Chemtura Corporation vs Union of India & Ors. on 28 August, 2009, https://indiankanoon.org/doc/195444253/
4. Nokia of America Corporation vs Assistant Controller of Patents And on 2 July, 2024, https://www.mondaq.com/india/patent/92704/patent-trouble-nokia-sues-assistant-controller-of-patents-and-designs
5. Maj Retd Sukesh Behl & Anr vs Koninklijke Philips Electronics N V on 19 January, 2016, https://indiancaselaw.in/major-retired-sukesh-behl-anr-v-koninklijke-philips-electronics/